Heavy, Inc. v. Goldman

Filing 13

OPPOSITION TO , [1], on behalf of Respondent Justin Goldman, FILED. Service date 04/09/2018 by CM/ECF. [2274278] [18-910] [Entered: 04/09/2018 09:23 AM]

No.18-910
IN THE
UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
WSTIN GOLDMAN,
Plaintiff-Respondent,
- againstBREITBART NEWS SERVICE, LLC, VOX MEDIA, INC.,
HERALD MEDIA, INC., BOSTON GLOBE MEDIA PARTNERS, INC.,
Defendants,
HEAVY, INC., TIME, INC., YAHOO, INC., GANNETT COMPANY, INC.,
and NEW ENGLAND SPORTS NETWORK, INC.,
Defendants-Respondents.

ON APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
NO. l-1 7-CV-03144 (KBF)

PLAINTIFF-RESPONDENT'S RESPONSE TO
DEFENDANTS-PETITIONERS' PETITION

KENNETHP.NORWICK
NORWICK & SCHAD
11 0 East 59th Street
New York, New York 10022
[phone]
[e-mail]
Counsel for Plaintiff-Appellant

TABLE OF CONTENTS

TABLE OF AUTHORITIES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . u
IN"'TR.ODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

1

The Essence of this Case . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ..

1

The Law to Date . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

8

Controlling Question of Law. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

18

Substantial Grounds for Difference of Opinion . . . . . . . . . . . . . . . . . . . . .

20

Materially Advance the Ultimate Termination of the Litigation . . . . . . . . . .

21

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

23

TABLE OF AUTHORITIES
Cases
Capitol Records, LLC v. ReDigi Inc., 934 F. Supp. 2d 640
(S.D.N.Y. 2013)..... . ..... . .. ................... . . ...
Flava Works, Inc. v. Gunter, 689 F.3d 754 (7th Cir. 2012). . . . . . . .

11-12
passim

Grady v. Iacullo, 2016 U.S. Dist. LEXIS 51584 (D. Colo. 2016). . .. .

15

Hard Rock Cafe International v. Morton, 1999 U.S. Dist.
LEXIS 8340 (S.D.N.Y. 1999)................ ............

16-17

Leveyfilm, Inc. v. Fox Sports Interactive Media, LLC, 2014 U.S.
Dist. LEXIS 92809 (N.D.111. 2014).. . . . . . . . . . . . . . . . . . . . . .

12-13

Live Face On Web, LLC v. Biblio Holdings LLC, 2016 U.S. Dist.
LEXIS 124198 (S.D.N.Y. 2016).......... . . . . . . . . . . . . . . .

14

MyPlayCity, Inc. v. Conduit Ltd, 2012 U.S. Dist. LEXIS 473123
(S.D.N.Y. 2012). ·. .... . ... .. .. .... ....... .. . . ..... .. . ..

10

Pearson Education, Inc. v. Ishayev, 963 F.Supp.2d 239
(S.D.N.Y. 2013). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

11

Perfect 10, Inc. v. Amazon.com, Inc., 508 F .3d 1146 (9th Cir. 2007) .

passim

The Leader' s Institute, LLC v. Jackson, 2017 U.S. Dist. LEXIS,
193555, 2017 WL 5629514 (N.D. Texas 2017)... . .........

passim

Totally Her Media, LLC v. BWP Media USA, Inc.,
Case 2:13-cv-08379 (C.D.Cal. 2015)... . .. . ..... . .. .. . ...

13-14

United States v. Eastport S.S. Corp., 255 F.2d 795 (2d Cir. 1958)..

19

Statutes
United States Copyright Act, 17 U.S.C. §106(5))...... . . .. . ... ...

passllll

United States Copyright Act, 17 U.S.C. §101 . . .. .. . . . .. . ... . . . . .

passun

Secondary Authority
Ginsburg and Budiardjo, Liability for Hyperlinks to Infringing
Content: International and Comparative Perspectives, 41 Colum.
J.L. & Arts 153 (2018) .. ........ . .... . .. . .. . . . .. . ... . . . .

2n

INTRODUCTION
Plaintiff-Respondent Justin Goldman ("Plaintiff') respectfully submits this
response to Defendants-Petitioners' request for permission to file an interlocutory
appeal. Plaintiff does not shirk from this Court's review of Judge Forrest's decision - indeed, we welcome it. At the same time, we believe this Court should
have as full an understanding as possible of all of the relevant circumstances underlying the pending petition. In our view, those circumstances suggest that the
petition does not merit the extraordinary relief it requests.
The Essence of this Case
There are two separate but related aspects to what this case is really about.
The first is the facial "legal" argument as to what, as a matter of law, the governing law is and should be. The second is how a single industry - the for-profit
website publishing business - effectively created for itself a very profitable "rule
of law" at the expense of already-struggling copyright owners and now seeks to
have the courts -- including this Court -- vindicate and make "legal" their selfcreated and, they hoped, self-fulfilling private law-making. We will first address
the "legal" aspect of this case.
This case turns almost entirely on a single 2007 decision by the Ninth
Circuit1 and, more specifically, the extent to which that decision -- more ac1

Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir, 2007).

curately, one of its holdings -- should be plucked entirely out of context and blindly applied to fact patterns that could not be more different. That decision has been
roundly criticized by one of this country's most respected academic authorities on
the law of copyright -- Columbia Law School Professor Jane Ginsberg2 -- and it
was decisively criticized and rejected by two separate U.S. District Courts, including the decision below.3 More important, it has never been accepted or applied in
a case presenting a legal framework or fact pattern remote-ly analogous to that of
this case. Indeed, as here relevant, that ten-year old decision is essentially a legal
orphan, with only a smattering of cases (all involving very different facts and/or
sections of the Copyright Act) even mentioning it. 4
The facts of Perfect 10 can be succinctly stated. The defendant was the
Google Image Search Engine. In response to a specific search request by a user,
and without the involvement of any human discretion or activity, it generated
countless - possibly tens of thousands - of"thumbnail" (reduced size and low
resolution) images responsive to the specific search. Then, as a result of internal

2

Ginsburg and Budiardjo, Liability for Hyperlinks to Infringing Content: International
and Comparative Perspectives, 41 Colum. J.L. & Arts 153 (2018).
3

The other case is The Leader's Institute. LLC v. Jackson, 2017 U.S. Dist. LEXIS
193555, 2017 WL 5629514 (N.D. Texas 2017).
4

Those cases are discussed further below.

2

(and invisible) computer coding, ifthe user volitionally clicked on a particular
thumbnail, a full rendition of that image is displayed in a one-on-one, decidedly
non-"public," interaction. That's it; those are the underlying facts of Perfect 10.
The copyright owner of photos that were thus displayed in full when the
corresponding thumbnails were clicked sued Google for, inter alia, infringement of
the owner's "exclusive right" under Section 106(5) of the Copyright Act to publicly "display" the relevant copyrighted works. 5 In adjudicating that search-engine
display right infringement claim, the Ninth Circuit's opening sentence made explicit what it was deciding: "In this appeal, we consider a copyright owner's efforts to stop an Internet search engine from facilitating access to infringing
images" (emphasis added). (Note: no mention of any other outlets - especially
for-profit editorial websites like defendants' -- and no mention of actually providing (by showing) full renditions of such images, as compared with only "faciliating" access to them.
In deciding that (automated, robotic, search-engine user-click-activated)
case, the Ninth Circuit articulated a so-called "Server Test" and held that Google's
5

Section 106(5) of the Copyright Act grants to copyright owners the "exclusive right" to
"display the copyrighted work publicly." (17 U.S.C. §106(5). Section 101 of the Act defines
"display" as follows: "To display a work means to show a copy of it, either directly or by means
of a film, slide, television image, or any other device or process . .." (17 U.S.C. §101) (emphasis
added).

3

search engine did not infringe the plaintiffs "display right" because it did not possess its own copy of the image at issue and did not save a copy of it on its server.
The opinion did not mention that no copyright case before it had ever held that a
"display" infringement required any such possession or saving. 6 Within the past
few months, two separate U.S. District Courts have flatly refused to apply Perfect
lQ to the "display" cases before them. The only issue on this (requested) appeal is

whether that "Server Test" from a search engine user-activated case must -- as a
matter of law -- be applied to a wide range of cases that could not be more different factually or legally.
In this connection, the facts underlying this case can also be succinctly

stated: Each of the moving defendants operate for-profit editorial websites that
offer - display - editorial content for viewing by their visitors. Inevitably, that
content includes photographs, and prior to Perfect 10 the law required that -- at
least absent a "fair use" defense -- a license from the copyright owner be obtained.
But, as this case makes clear, the website publishing industry chose to "interpret"
Perfect 10 so as to abolish that pre-2007 license-required copyright norm. In
short, that is exactly -- and only -- what this case is really about: a single industry's attempt to have the courts -- through this case -- create out of whole cloth an
6

Also, no copyright case since, except perhaps for one or two that followed Perfect 10,
has held that a "display" infringement requires the alleged infringer to possess or save the work
infringed, and several cases have rejected that proposition.
4

industry-wide blanket immunity from any legal consequences when they help
themselves to copyright content that they previously had to pay for.

In contrast to Google's robotic sweeping-up and presenting in thumbnails
countless photos in response to a search request, each defendant here separately
decided to, and then reached-out for, and then helped-itself to, and then prominently displayed on their websites, a copyrighted photo owned by plaintiff. (One
example of those displays in set forth on the following page.) As a result of decisions made and coding engineered solely by defendants, those displays were
presented in full on their websites. In effect, defendants did the (Perfect 10-required) "clicking" for their visitors so that those visitors had no choice: the photo
was there to be seen whether or not they had any interest in seeing it.
Again, the only "legal" issue on this putative appeal is whether, as a matter
of law, this Court (and indeed every court in the county) must apply the searchengine user-click-activated "Server Test" to cases like this one. No court - repeat
no court - has come close to so holding, and two district courts, including the
court below, have explicitly refused to do so.
But underlying that "legal" issue is the real-world machinations that have
led to it. As defendants effectively concede, although not so directly, their industry used their interpretation of Perfect 10 to bestow upon themselves the legal im-

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munity they now ask this Court to actually grant to them. As defendants put it,
"[Judge Forrest's] Order upended settled expectations regarding liability for the
ubiquitous practice of linking to content on the internet." (Petition, p. 2.)
Exactly. But, crucially, the real questions are: Were those "settled expectations"
fairly based on law -- the search-engine Perfect 10 case -- or instead on a cynical
self-serving and self-created concoction of a legal "justification" for, as here, no
longer seeking licenses for their for-profit uses of copyrighted content? And,
second, whether this Court will now actually give to that industry the blanket legal
immunity it has already granted to itself?
One more important point must be made here. Misleadingly, defendants'
petition implies that embedding only involves "social media," and more specifically "tweets" on Twitter. In fact, as defendants conceded below, anything on the
internet -- photographs, movies, entire books -- can be embedded, and the industry-wide immunity defendants ask this Court to grant them would wholly legalize
the wholesale theft-by-embedding of everything on the Internet. The Complaint in
this case set forth several hypotheticals to illustrate this point, but we will only
present a new one here. Defendant Time, Inc., has published a book -- which it
has posted on a website controlled by it -- entitled 100 Photographs: The Most
Influential Images of All Time (http://lOOphotos.time.com/). If defendants prevail in this case and obtain the industry-wide immunity they seek, every other
7

website in the world - including hate-speech, porn, political, and schlocky commercial sites - will be able freely and without legal consequence to help themselves to, in the guise of embedding, that entire book, including of course its 100
classic photographs that would otherwise be fully protected by copyright.
And a word about the ostensible reaction to Judge Forrest's decision. We
acknowledge that the for-profit website industry is not happy with that decision -after all, it may require those websites (like defendants here) to pay for copyrighted content that they have (over the past ten years) simply helped themselves
to (as here) -- claiming "embed immunity." And we acknowledge that they and
their affiliated organizations and sympathizers have mounted a largely hysterical
(and false) public reaction to the decision. But the truth remains: If, as Judge
Forrest found, there is no such "embed immunity," then even the most rabid
reaction to that decision should have absolutely no effect on any decision by this -or any Court. The fact that defendants here so heavily stress that largely selfinterested reaction to the decision only reiterates how threatened they are by the
prospect of having now to pay for what they admittedly "expected" to continue to
be able to take for free.
The Law to Date
In submissions to Judge Forrest, the defendants claimed that Perfect 10 and
its "Server Test" were "settled law." In their petition, they claim "settled prece8

dent" (p. 1), "a test since applied by a host of other courts" (p. 2), and "longstanding precedent from the Ninth Circuit and elsewhere" (p.3). However, as Judge
Forrest explicitly found, these claims are, to say the least, unsupported and unpersuasive. (To say a little more, they are nonsense.) To repeat: no case has ever
even arguably applied those claimed "settled precedents" to cases at all analogous
to this one -- and two cases flatly refused to do so.
Because defendants have so extravagantly presented their "settled law"
claims as the foundation for their petition, we will set forth here - borrowing from
our main brief to Judge Forrest - our review of those claims, examining each of
the "host" of cases defendants have claimed support their argument.
First, however, there is this revealing fact: A very recent Lexis search for
the term "Server Test" reports this result: Since it was invented in Perfect 10 over
a decade ago, and apart from Judge Forrest's decision below, the term appears in a
total of nine court decisions, emanating from three cases, all in the Ninth Circuit,
with the plaintiff in two of those three cases "Perfect 10, Inc." Judge Forrest, of
course, flatly refused to apply the "Server Test" to the facts of this case. Not

exactly a viral national groundswell.
Here is our review of all of the ("host of') cases cited by defendants below.
1. MyPlayCity, Inc. v. Conduit Ltd, 2012 U.S. Dist. LEXIS 473123

(S.D.N.Y. 2012): This was not a 106(5) display case but instead a 105(3) "dis9

tribution" case; and the defendant was not as here an editorial website in the business of displaying copyrighted material. The alleged infringement of the distribution right grew out of a prior licensing agreement between the parties. Most
significantly, a visitor's access to the plaintiffs copyrighted work was only triggered by that visitor volitionally clicking on a "Play Now" tab that contained the
necessary instructions to import the copyrighted work. There is not a hint in this
decision that supports defendants' claim to be legally entitled to the click-free,
instructions-free, 7 user-discretion-free exploitation of every copyrighted work ever
created.
2. Flava Works, Inc. v. Gunter, 689 F.3d 754 (7th Cir. 2012). This was not
a display case and it involved thumbnails of photos that had to be clicked by the
visitor to gain access to the underlying copyrighted work. Here too, there is not a
hint in this decision that supports defendants' claim to be legally entitled to the
click-free, instructions-free, user-discretion-free exploitation of every copyrighted
work ever created.
3. Pearson Education, Inc. v. Ishayev, 963 F.Supp.2d 239 (S.D.N.Y. 2013).
This was not a display case. The Court declared: "As a matter of law, sending an
email containing a hyperlink to a site facilitating the sale of a copyrighted work
7

Here, and for all purposes in this brief, we intend "instructions" to mean guidance from
one party to another party for possible use by that other party, and not entirely self-executing
computer programming that only the originating party is aware of and can act on.

10

does not itself constitute copyright infringement." Here too, there is not a hint in
this decision that supports defendants' claim to be legally entitled to the click-free,
instructions-free, user-discretion-free exploitation of every copyrighted work ever
created.
4. Capitol Records, LLC. v. ReDigi, Inc., 934 F.Supp.2d 640 (S.D.N.Y.
2013). This case had nothing whatever to do with links of any kind or embedding
of any kind. Instead, it was about the defendant's "streaming thirty-second song
clips and exhibiting album cover art to potential buyers." At 652. In a threesentence table-setting paragraph, not thereafter revisited, Judge Sullivan wrote
(note the double hedge "may" and "in part"):
The Ninth Circuit has held that the display of a photographic image
on a computer may implicate the display right, though infringement
hinges, in part, on where the image was hosted. Perfect JO, Inc. v.
Amazon.com, Inc., 508 F.3d 1146, 1160 (9th Cir. 2007).
Defendants apparently contend that that one-sentence hedged dictum that had
nothing to do with the case in which it was made supports their position in this
case. We disagree. And, of course, here too there is not a hint in this decision that

supports defendants' claim to be legally entitled to the click-free, instructions-free,
user-discretion-free exploitation of every copyrighted work ever created.
5. Leveyfilm, Inc. v. Fox Sports Interactive Media, LLC, 2014 U.S. Dist.
LEXIS 92809 (N.D.111. 2014). This case involved the defendant's "links" to the

11

plaintiffs work, and the Court strictly followed both its Circuit's Flava Works,
discussed above, which involved thumbnails and discretionary visitor access-byclicking, and Perfect 10, which also involved thumbnails and discretionary visitor
access-by-clicking. Although plaintiff here believes that even Perfect lO's relatively constricted search engine opinion was erroneous, Leveyfilm' s explicit reliance on cases involving thumbnails and access-by-clicking provides no support
whatever for defendants' claim to be legally entitled to the click-free, instructionsfree, user-discretion-free exploitation of every copyrighted work ever created.
6. Totally Her Media, LLC v. BWP Media USA, Inc., Case 2:13-cv-08379
(C.D.Cal. 2015). The operative facts of this case, in which the alleged infringer
was the plaintiff, were as follows (emphasis added): "All of the images identified
in the settlement database were stored on third-party websites, and were only displayed on Plaintiffs website by hypertext links that allowed users to view the material without entering the separate URL where the photographs were stored....
However, third-party forum users selected that content on their own and linked to
that content on their own . . . . Plaintiff did not review or approve any user posts
to its website, including the posts containing the allegedly infringing images."
Here, of course, defendants not only "selected" and "reviewed" and "approved"
their respective displays of the Photo -- they alone made that full display possible,
without input from anyone else. Thus, here too, there is not a hint in this decision
12

that supports defendants' claim to be legally entitled to the click-free, instructionsfree, user-discretion-free exploitation of every copyrighted work ever created.
7. Live Face On Web. LLC v. Biblio Holdings LLC, 2016 U.S. Dist.
LEXIS 124198 (S.D.N. Y. 2016). This was a not a "display" case but instead a
"distribution" case. In this case, Judge Buchwald quoted from Conduit (above),
which involved a "Play Now" clicking option to access the plaintiff's copyrighted
work, to the effect that "providing a 'link' to a site containing copyrighted material
does not constitute direct infringement of a holder's distribution right." But we are
not here dealing with a "link" to another site with a discretionary "Play Now"
option but with the non-discretionary full unavoidable display of plaintiff's Photo.
Here too there is not a hint in this decision that supports defendants' claim to be
legally entitled to the click-free, instructions-free, user-discretion-free exploitation
of every copyrighted work ever created. (In any event, Judge Buchwald declined
to rule on this issue, declaring: "Nevertheless, as this subject was hardly briefed
and the decisions in Perfect 10 and MPC had the benefit of factual development,
we will permit discovery on the relationsh.ip between Tweople and the distribution
of the allegedly infringing software.")
8. Grady v. Iacullo, 2016 U.S. Dist. LEXIS 51584 (D. Colo. 2016). As in
Perfect 10, Flava Works, and other cases discussed above, the defendant in this
case merely displayed "thumbnails" of the plaintiff's copyrighted works and the
13

plaintiffs allegation of infringement centered on whether the defendant's "sharing
of links to plaintiffs photographs and videos with other users of a website constituted copyright infringement." Since this decision seems limited to the "sharing
of links" via thumbnails, not present here, here too there is not a hint in this
decision that supports defendants' claim to be legally entitled to the click-free,
instructions-free, user-discretion-free exploitation of every copyrighted work ever
created. Moreover, in a subsequent decision, the Court actually granted summary
judgment to the copyright-owner plaintiff, on reasoning that seems directly applicable to defendants here.
So. to recap defendants' own cases. none -- not one -- even arguably
supports their no-clicking-needed. no-instructions needed, no visitor-discretionneeded position in this case and each thus actually supports plaintiffs position
that defendants' egregiously grandiose proffered interpretation of Perfect 10 is
utterly unsupported, unlawful. and must be rejected.
This, then, is the truth underlying defendants' claims to this Court that the
position they espouse -- flatly rejected by Judge Forrest on the facts before her -constitutes "settled precedent" adopted by a "host" of other courts. The claims are
baseless, and call into serious question the credibility of all their other claims as
well. If anything, Perfect 10 - as least as here relevant - is a lonely legal orphan.

14

Moreover, as explicitly noted by Judge Forrest, a pre-Perfect 10 decision by
Judge Patterson in the Southern District of New York presciently rejected the very
post-Perfect 10 argument now made by defendants here. Hard Rock Cafe International v. Morton, 1999 U.S. Dist. LEXIS 8340 (S.D.N.Y. 1999) was a trademark
case in which Judge Patterson squarely declared as follows (emphasis added):
Through framing, the Hard Rock Hotel Mark and the Tunes site are
combined together into a single visual presentation and the Hard
Rock Hotel Mark is used to promote the sale of CDs by Tunes.
Because the Tunes material appears as a window within the original
linking page, it is not clear to the computer user that she or he has left
the Hard Rock Hotel web site.... The Tunes web page is reached in
the same fashion as any other section of the Hard Rock Hotel web
site, by clicking on a button labeled "record store" which resembles
the other buttons leading to web pages maintained by Hard Rock
Hotel The Hard Rock Hotel web site and the Tunes web page are
thus smoothly integrated. In light of this seamless presentation of the
Tunes web page within the Hard Rock Hotel web site, the only possible conclusion is that the Hard Rock Hotel Mark is used or exploited to advertise and sell CDs.
The District Court in Perfect 10 acknowledged that this decision was contrary to
its conclusion and chose, apparently for that reason, to disregard it. However, in
the Southern District of New York at least, this is a never-challenged powerful

precedent rejecting defendants' proffered interpretation of Perfect 10.
While the motions below were being briefed, The Leader's Institute decision
was issued. In that case, the defendants claimed that the plaintiff, a direct competitor, "caused" the defendants' copyrighted content "to appear" on the plaintiffs'

15

website. The plaintiff there made the same argument defendants make here -- that
Perfect 10 immunized from liability their blatant display of the defendants' copyrighted content. The Court would _
have none of it. Referring to "framing," a synonym for embedding, the Court declared (emphasis added):
By framing Magnovo's copyrighted works, the plaintiffs displayed the works by
"show[ingl a copy" of the works via a "process." 17 US. C. § 101. That process
was the instructing of users' web browsers to dis-play Magnovo's copyrighted
works when those users visited one of the accused TLI domain names. And the
plaintiffs displayed the copy-righted works publicly. By instructing users' web
browsers to display Magnovo's content upon accessing TLI's publicly-accessible
web-sites. the plaintiffs "transmit[ed] ... a display of the [defendants'] work ... to
the public." Id.
Rejecting the invocation of Perfect 10, the Court held:
But the plaintiffs' reliance on Perfect 10 is misplaced. First, TLI's conduct is
factually different from Google's. Google did not actually display infringing
images but instead provided links for users to access sites that displayed
infringing .images. . . . Upon visiting one of the TLI sites, a user would
necessarily see Magnovo's content. Unlike Google, TLI did not merely provide a
link by which users could access Magnovo content but instead displayed
Magnovo's content as if it were its own. . . . And to the extent Perfect 10 makes
actual possession of a copy a necessary condition to violating a copy-right owner's
exclusive right to display her copyrighted works, the Court respectfully disagrees
with the Ninth Circuit. ... I

2017 U.S. Dist. LEXIS 193555 at *28-*33 (emphasis added; footnotes omitted).
Final note about The Leader's Institute: The defendants here maintained
below that that case was "wrongly decided." This means that they will also
maintain to this Court that, as a matter of ("controlling") law, the plaintiff there
must be legally free -- immune from any infringement claim -- to continue in perpetuity to display the defendants' copyrighted content as if it were their own.
16

Controlling Question of Law
The only way this requirement for an interlocutory appeal can be met here is
if this Court agrees that extracting Perfect 1O's "Server Test" from its factual and
legal context and then claiming ipse dixit that it must "as a matter of (controlling)
law" be robotically applied to every other conceivable "display" case involving
embedding - regardless of the facts and legal framework of those cases, including
The Leader's Institute and this case -- presents such a qualifying "question." Because Perfect lO's "Server Test" has never been applied to a case even arguably
analogous to this one, and has been flatly rejected by two separate district courts,
we respectfully submit that the ipse dixit claim of a "controlling question of law"
here must be rejected. Indeed, we think relevant here this observation from this
Court: "In view of the criticism which the decision has received and the failure of
the Court to discuss the principles upon which the decision rests, we think that [a
cited decision] cannot be taken as precedent for other than its own limited facts."
United States v. Eastport S.S. Corp., 255 F.2d 795, 805 (2d Cir. 1958).
Substantial Grounds for Difference of Opinion
Here again, ipse dixit proclamations should not suffice. As demonstrated
above, no court- not one - has found that the "Server Test" must be applied to
every conceivable display/embed case, and no case has applied it to a fact pattern
17

and legal framework even arguably analogous to this case. And, of course, there is
not a hint in Perfect 10 itself that it was intended to declare a "controlling" rule of
law for every conceivable display/embed case, and not just the "Internet search
engine"/"facilitating access" case that it delimited in its opening sentence and that
are the only subjects of both the District Court's and Ninth Circuit's opinions.
Defendants invoke the Seventh Circuit's opinion in Flava Works, Inc. v.
Gunter, 689 F.3d 754 (7th Cir. 2012) as support for their petition. This is curious,
since a) that was not a "display" case; b) it involved a service analogous to a
search engine; c) it involved "thumbnails" d) that had to be clicked by a user
before anything further could be seen. But, of course, the issue in this case is
whether the "Server Test" must as a matter of law be applied to a case where a) the
defendants were not search engines but for-profit editorial websites b) that themselves affirmatively reached-out for and helped themselves to a specific copyrighted work; c) and then prominently displayed that photo in full (no thumbnails)
with no involvement (no clicking) on the part of their visitors, who had to see it
whether they wanted to or not. With due respect, Flava Works has nothing whatever to do with any issue presented by this petition. Instead, the issues on this
petition are a) whether as a "controlling" rule of law the "Server Test" must be
applied to display/embed cases that do not involve search engines or clickable
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thumbnails and do involve a website seeking-out and prominently displaying a
copyrighted work and b) whether there are any grounds for a "difference of
opinion" on that issue. Flava Works, and indeed Perfect 10, are useless on those
issues.
The only way this requirement for an interlocutory appeal can be met is to
accept at face value defendants' claim that the Ninth Circuit in Perfect 10 and the
Seventh Circuit in Flava Works expressed the "opinion" that the "Server Test"
must as a matter of law be applied to every conceivable "display" case involving
embedding, such as this case and such as The Leader's Institute. We respectfully
submit that there are no "grounds" for a "difference of opinion" on whether the
"Server Test" must be so applied, much less "substantial" grounds.
Materially Advance the Ultimate Termination of the Litigation"
The third § 1292(b) factor that must be satisfied is whether "an immediate
appeal from [Judge Forrest's Order] may materially advance the ultimate termination of the litigation." (emphasis added) The answer to this factor is clear.
At present there are six remaining defendants in this case. At most, a
hypothetical interlocutory reversal of the Order -- without any other remand for
further proceedings, etc.-- would result in the departure of only half of the remaining defendants. Which means that the case will necessarily proceed in full
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on every remaining issue -- including "the very serious and strong" defenses
mentioned in the Order -- which means full discovery (including documents and
depositions); expert reports and depositions; extensive motion practice (including
dispositive motions); a jury trial; and almost certainly (further) appeals to this
Court. Thus, if this Court were to grant the pending petition, that will essentially
guarantee that there will be (at least) two separate appeals in this litigation, thus
(unnecessarily) doubling the appellate time, effort and expenditure of resources for
all concerned, which is of course a major reason interlocutory appeals are strongly
disfavored in federal practice.
This factor is expressly limited to "the ultimate termination of the litigation," and does not (at least overtly) contemplate the removal of a few parties
along the w:ay. Thus, even if three defendants left the case after the interlocutory
appeal, there is simply no way that appeal -- especially if all proceedings are
stayed pending its resolution -- could even arguably advance "the ultimate termination of the litigation." The defendants' suggestion that about a year from now -after the proposed interlocutory appeal is briefed, argued and decided -- the hypothetical departure, then, of three defendants (leaving three) will somehow significantly advance "the ultimate termination of the litigation" defies experience and
belief.

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CONCLUSION
For all of the foregoing reasons, we respectfully submit that the defendants'
petition should be denied.
Dated: April 6, 2018
Respectfully submitted,
sf Kenneth P. Norwick
KennethP. Norwick
NORWICK & SCHAD
110 East 59th Street
New York, NY 10022
[phone]
[e-mail]

Counsel for Plaintiff-Respondent

CERTIFICATE OF COMPLIANCE

I certify that, pursuant to Fed. R. App. P. 5(c)(l) and 32(f) and (g), the
foregoing Plaintiff-Respondent's Response to Defendants-Petitioners' Petition is
proportionateley spaced, has a typeface of 14 points or more and contains 5, 148
words together with the contents of page 6.
s/ Kenneth P. Norwick
NORWICK & SCHAD
110 East 59th Street
New York, NY 10022
[phone]
[e-mail]
Counsel for Plaintiff-Respondent